WIPO Arbitration and Mediation Center
EXPERT DECISION
Companhia Muller De Bebidas v. Productos Tropicales, Heinz B�sch (Mr.)
Case No. DCH2004-0013
1. The Parties
The Claimant is Companhia Muller De Bebidas, Pirassununga, Sao Paulo, Brazil, represented by Jacobacci Partners SA, Geneva, Switzerland.
The Respondent is Productos Tropicales, Heinz B�sch, Z�rich, Switzerland.
2. Domain Name
The dispute concerns the domain name .
3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the Center) on July�8,�2004. On July�12,�2004, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On July�12,�2004, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), adopted by SWITCH, the .ch and .li registry, on March�1,�2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on July�14,�2004. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was August�3,�2004.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph�15(d) of the Rules of Procedure.
On August�4,�2004, the Center notified the Claimant accordingly, who had already on July�8,�2004, made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph�19 of the Rules of procedure and who has paid the required fees.
On August�17,�2004, the Center appointed Michael Treis as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties.
4. Factual Background
The Claimant owns the Swiss trademark registration no. 445565 “CACHACA 51 & design (label)” of July�28,�1995, in Class 33 for “alcoholic beverages originating from Brazil, made from cane sugar and containing 40% of alcohol. The Claimant manufactures alcoholic beverages under the trademark CACHACA 51 and sells these products on a worldwide basis.
The Respondent has registered the domain name . The Respondent is a Swiss company engaged in the import & export of beverages from South America. The Respondent has stated that it is active in the area of parallel imports of alcoholic beverages under the trademark CACHACA51 into Switzerland and in the sale of these products in Switzerland.
By letter of March�3,�2004, Claimant’s representative summoned the Respondent to cancel the Domain Name or to transfer it to the Claimant. The Respondent did not comply with this request.
5. Parties’ Contentions
A. Claimant
The Claimant claims to have the exclusive rights to the use of the trademark CACHACA 51 for alcoholic beverages in Switzerland. Claimant contends that by registering and using the domain name , the Respondent attempts to attract for commercial gain Internet users to his website. He claims that by doing so, the Respondent creates a likelihood of confusion with the Claimant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Claimant contends that this amounts to an infringement of his Swiss trademark rights and to unfair competition.
B. Respondent
The Respondent did not reply to the Claimant’s contentions.
6. Discussion and Findings
A. The Claimant has a right in a distinctive sign
The Claimant has established that by virtue of its Swiss trademark registration no. 445565, it has an exclusive right in Switzerland the trademark CACHACA 51 & design (label) in relation to alcoholic beverages from Brazil. This trademark is no doubt distinctive, its most distinctive elements being the word CACHACA and the number 51. It is therefore clear that the Claimant owns exclusive trademark rights in relation to this sign.
B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant’s right
Pursuant to article 13, paragraph 1 and 2, of the Swiss Trademark Act, the owner of a trademark has an exclusive right to use the trademark to distinguish the goods or services for which it has been registered. This exclusive right also encompasses the use of the trademark as an element of a domain name, when such domain name is used for a website used for promoting and distributing goods which are identical with or similar to the goods for which the trademark owner has registered the mark.
In the present case, the website which can be accessed under the domain name is currently under construction and consists of only one page. However it is clear from the text which appears on the website that it will be used for promoting beers, alcoholic beverages and juices from Latin America. It can therefore be assumed that it will also be used to promote the sale of CACHACA 51 in Switzerland. The right to use the name CACHACA 51 as an element of such a domain name solely belongs to the owner of the Swiss trademark right. For this reason, it constitutes an infringement of this trademark right to register and use a domain name comprising this trademark without the trademark owner’s consent.
It does not make any difference here whether the Respondent is or will be distributing original goods marked CACHACA 51. If the Respondent sells original goods under this trademark, he may be entitled to use the trademark for publicity purposes. But the scope of this right does not extend to the registration and use of the domain name comprising the trademark CACHACA 51. This right solely belongs to the trademark owner or, as the case may be, to his authorized agent or exclusive Swiss distributor. It is not a right of a third party which sources its goods through parallel imports. As the Respondent has stated to the Complainant’s representative that he is engaged in parallel imports of CACHACA 51 beverages, it is clear that he does not have an implicit consent by the Respondent to use the trademark as a domain name.
Swiss consumers and others who will be accessing the Respondent’s website under the domain will expect this website to be operated by the Complainant, or by a third party having Complainant’s explicit or implicit consent. They will therefore be confused as to the existence of a legal or commercial relationship between the parties of this dispute. Consequently, the Respondent’s registration and use of the domain name amounts to a clear infringement of the Complainant’s Swiss trademark right.
The Respondent has not replied to the Complaint, so there are no other facts or circumstances before the Expert which could constitute a relevant grounds for defense against the Complaint.
The Expert therefore finds that the Complaint is well-founded.
7. Expert Decision
For the above reasons, in accordance with Paragraphs 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Michael Treis
Expert
Date: September�1,�2004
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